Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1192817
`
`Filing date:
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`02/23/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91269142
`
`Party
`
`Correspondence
`address
`
`Plaintiff
`Audi AG
`
`WILLIAM C WRIGHT
`EPSTEIN DRANGEL LLP
`60 EAST 42ND ST STE 2520
`NEW YORK, NY 10165
`UNITED STATES
`Primary email: mail@ipcounselors.com
`212-292-5390
`
`Submission
`
`Motion for Summary Judgment
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 02/24/2022
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Samuel T. Kilb
`
`mail@ipcounselors.com
`
`/Samuel T Kilb/
`
`02/23/2022
`
`ES68 MSJ final - Redacted.pdf(285928 bytes )
`Exhibit 1 - Rog Responses.pdf(225912 bytes )
`Exhibit 2 - Declaration.pdf(30004 bytes )
`REDACTED Declaration iso ES6 ES8_FINAL SIGNED - Gar-
`bis_Redacted.pdf(134505 bytes )
`Exhibit A - Interbrand.pdf(1189627 bytes )
`Exhibit B - Registrations.pdf(1912614 bytes )
`Exhibit C1 - articles.pdf(3891091 bytes )
`Exhibit C2 - articles.pdf(5648832 bytes )
`
`

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`
`
`
`
`
`
`William C. Wright
`Samuel T. Kilb
`
`EPSTEIN DRANGEL LLP
`60 East 42nd Street, Suite 2520
`New York, NY 10165
`Tel: 212-292-5390
`Fax: 212-292-5391
`E-Mail: mail@ipcounselors.com
`Attorneys for Opposers
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`AUDI AG,
`Opposer,
`
`
`
`v.
` Opposition No. 91269142
`
`
`NIO (ANHUI) HOLDING CO., LTD.,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`MOTION FOR SUMMARY JUDGMENT
`
`
`
`
`Pursuant to 37 C.F.R. § 2.127 and Fed R. Civ. P. 56, Opposer Audi AG (“Opposer”) by
`
`its undersigned attorneys, hereby moves for summary judgment to sustain the Opposition against
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`Applicant Nio (Anhui) Holding Co., Ltd’s (“Applicant”) U.S. Trademark Applications Ser. Nos.
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`88740491 and 88740497 (“Applications”) for the marks ES6 and ES8 (“Applicant’s Marks”).
`
`
`
`As described below, there are no material facts in dispute and the Board should sustain
`
`the instant opposition and refuse the Applications as a matter of law.
`
`STATEMENT OF FACTS
`
`Founded in 1909, Opposer Audi AG is a German manufacturer of automobiles and one of
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`the world’s leading automobile companies. Opposer designs, engineers, manufactures, markets,
`
`
`
`1
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`

`

`and sells millions of vehicles under its house mark AUDI in nearly every country across the globe.
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`The AUDI brand is considered one of the most valuable brands in the world and is consistently
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`listed in Interbrand’s annual survey of the “Best Global Brands.” As Applicant stated in its
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`discovery responses: “Everyone in the automotive field is aware of Opposer.” See Exhibit 1,
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`Applicant's Objections and Responses to Opposer’s First Set of Interrogatories (“Interrogatory
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`Responses”), Responses Nos. 28 and 29.
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`Over the course of the last several decades, Opposer has used the letter “S” and “S” in
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`combination with various numbers in connection with its AUDI automobiles, including S3, S4,
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`S5, S6, S7 and S8. Opposer is the owner of all rights, title, and interest in and to the marks S, S3,
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`S4, S5, S6, S7 and S8 (hereinafter, “Opposer’s Marks”) for use in connection with, inter alia,
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`vehicles, vehicle parts and accessories and other related goods and services (hereinafter,
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`“Opposer’s Goods/Services”). Opposer has spent decades, and
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`Redacted - Confidential Attorneys' Eyes Only
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`, cultivating and
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`growing its S range of automobiles in connection with Opposer’s Marks, which are famous
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`throughout the world, including in the United States.
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`Opposer and Opposer’s Goods/Services have achieved great commercial success over the
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`past several decades, typically
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`Redacted - Confidential Attorneys' Eyes Only
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` of vehicles in the United
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`States alone. Exhibit 2, Declaration of Anthony Garbis in Support of Opposer’s Motion for
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`Summary Judgment (“Garbis Dec.”) ¶ 11. In addition, Opposer has spent
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`Redacted - Confidential Attorneys' Eyes Only
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`
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`advertising and promoting Opposer’s Goods/Services, and specifically, its vehicles, in the United
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`States. Garbis Dec. ¶ 13. Further, Opposer and Opposer’s Goods/Services have been prominently
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`featured in a number of widely distributed and read press publications, including, but not limited
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`to, Car and Driver, CNET, and MotorTrend. Garbis Dec. ¶ 12.
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`In addition to its extensive prior common law rights, Opposer owns registrations, as set
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`
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`2
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`

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`forth below, for the mark S and a family of S-formative marks, all of which are incontestable, for
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`vehicles in Class 12.
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`REGISTRATIONS
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`MARK
`
`S6
`S4
`S8
`S5
`S7
`
`S3
`
`REG. DATE
`
`APP./REG.
`NO.
`Sep. 12, 1995
`1917829
`Oct. 23, 2001
`2499526
`Jan. 29, 2002
`2534302
`Oct. 30, 2007
`3324676
`3421582 May 6, 2008
`Aug. 17,
`2010
`
`3835128
`
`
`
`
`
`
`
`4405143
`
`Sep. 24, 2013
`
`CLASS
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`STATUS
`
`12
`12
`12
`12
`12
`
`12
`
`12
`
`Incontestable
`Incontestable
`Incontestable
`Incontestable
`Incontestable
`
`Incontestable
`
`Incontestable
`
`The registrations for Opposer’s Marks are valid and subsisting. Garbis Dec. ¶ 7. Accordingly,
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`Opposer has entitlement to a statutory cause of action. TBMP § 309.03(b).
`
`On December 27, 2019—years after Opposer firmly established itself and its brand in the
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`U.S. market, and well after Opposer’s Marks became famous in the United States and around the
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`world—Applicant filed with the United States Patent and Trademark Office Section 1(b)
`
`applications to register Applicant’s Marks in respect of “Vehicles, namely, land vehicles, boats,
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`all terrain vehicle; Electric vehicles, namely, high speed electric land vehicles, electric cars,
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`electric motorcycles; Autonomous vehicles, namely, autonomous underwater vehicles for seabed
`
`inspections, autonomous cars; Vehicle parts, namely, aircraft landing gear, chassis for motor
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`vehicles, vehicle wheels; autonomous cars; cars; electric cars; electric motors for motor cars;
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`electrically powered motor vehicles; land vehicles; motor vehicles and their structural parts; tires
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`for vehicles; Sports cars; Motors for land vehicles; Tires for vehicle wheels; Steering wheels for
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`vehicles” in Class 12 and “Vehicle battery charging services; vehicle maintenance; Motor vehicle
`
`
`
`3
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`

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`maintenance and repair; Car washing; Anti-rust treatment for vehicles; Refueling and maintenance
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`vehicle service stations; Vehicle repair services for breakdown assistance; Vehicle battery
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`charging” in Class 37 for Ser. No. 88740491, and in respect of “Vehicles, namely, land vehicles,
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`boats, all terrain vehicle; Electric vehicles, namely, high speed electric land vehicles, electric cars,
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`electric motorcycles; Autonomous vehicles, namely, autonomous underwater vehicles for seabed
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`inspections, autonomous cars; Vehicle parts, namely, aircraft landing gear, chassis for motor
`
`vehicles, vehicle wheels; autonomous cars; cars; electric cars; electric motors for motor cars;
`
`electrically powered motor vehicles; land vehicles; motor vehicles and their structural parts; tires
`
`for vehicles; Sports cars; Motors for land vehicles; Tires for vehicle wheels; Steering wheels for
`
`vehicles” in Class 12, and “Vehicle battery charging services; vehicle maintenance; Motor vehicle
`
`maintenance and repair; Car washing; Anti-rust treatment for vehicles; Refueling and maintenance
`
`vehicle service stations; Vehicle repair services for breakdown assistance; Vehicle battery
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`charging”, in Class 37 for Ser. No. 88740497 (collectively from both Applications, “Applicant’s
`
`Goods/Services”).
`
`Despite the fame of the AUDI brand, and Opposer’s prior rights in and to Opposer’s Marks,
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`Applicant has applied to register Applicant’s Marks for Class 12 goods identical to the type long
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`marketed and sold by Opposer under Opposer’s Marks in the United States, and for Class 37
`
`services identical and/or highly related to Opposer’s Goods/Services. As further addressed herein,
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`Opposer respectfully submits that Applicant’s Marks are likely to cause confusion with and dilute
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`Opposer’s Marks as a matter of law and as such, that Opposer is entitled to summary judgment on
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`all of its claims.
`
`
`
`
`
`ARGUMENT
`
`4
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`

`

`I.
`
`Standard for Summary Judgment
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`Summary judgment is proper where “there is no genuine dispute as to any material fact and
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`the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); see also TBMP §
`
`528.01. Where a motion for summary judgment is made in accordance with Rule 56, it is
`
`incumbent on the non-moving party to proffer evidence sufficient to demonstrate the existence of
`
`a genuine dispute as to a material fact. A dispute is genuine only if, on the entirety of the record, a
`
`reasonable jury could resolve a factual matter in favor of the non-movant. See Sweats Fashions,
`
`Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987).
`
`II.
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`Opposer’s Marks Have Priority Over Applicant’s Mark
`
`Opposer has priority over Applicant. Opposer has been using Opposer’s Marks for decades
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`prior to any date of priority on which Applicant may rely. Opposer’s Registrations Nos. 1917829,
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`2499526, 2534302, 3324676, 3421582, 3835128, and 4405143, have all become incontestable
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`under 15 U.S.C. § 1065, and therefore the registrations are conclusive evidence of Opposer’s
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`validity, ownership, and exclusive rights in and to Opposer’s Marks.
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`Opposer’s has continuously used Opposer’s Marks in commerce throughout the period of
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`its registrations, and Opposer continues to use Opposer’s Marks in commerce through the date of
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`this motion.
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`As of its discovery responses on September 17, 2021, Applicant admits that it has not
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`offered for sale any products under Applicant’s Marks in the United States. Interrogatory
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`Responses, Response No. 11. The Applications, which Applicant filed on an intent-to-use basis,
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`were not filed until December 27, 2019. Accordingly, given Opposer’s registrations and its
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`continued use in commerce of Opposer’s Marks as claimed in the Notice of Opposition, dating
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`back decades prior to Applicant’s earliest date of actual use or constructive use of Applicant’s
`
`
`
`5
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`

`

`Mark, Opposer has indisputable priority in and to Opposer’s Marks for Opposer’s Goods/Services.
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`III. Applicant’s Marks are Likely to Cause Confusion
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`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a
`
`registered mark that it is likely consumers would be confused, mistaken, or deceived as to the
`
`source of the goods and/or services of the parties. See 15 U.S.C. § 1052(d). Likelihood of
`
`confusion is determined by applying the factors set forth in In re E. I. du Pont de Nemours & Co.,
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`476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973), commonly known as the du Pont factors.
`
`Two factors are considered the most important of the du Pont factors: (1) the similarity of the
`
`marks, and (2) the relatedness of the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123
`
`USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
`
`1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard
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`Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
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`mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
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`the goods and differences in the marks.”).
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`A determination of likelihood of confusion is a question of law based on finding of relevant
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`underlying facts. See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
`
`2003); see also Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 671, 223 USPQ
`
`1281, 1282 (Fed. Cir. 1984) (“[T]he issue of likelihood of confusion is the ultimate conclusion of
`
`law to be decided by the court.”) (citations & quotations omitted); Sweats Fashions, Inc. v. Pannill
`
`Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) (holding that in the Federal Circuit,
`
`the issue of likely confusion is one of law, not fact, on summary judgment).
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`Here, there are no relevant facts in dispute, and the du Pont factors weigh heavily in favor
`
`of a finding of likelihood of confusion. As set forth below, the applied-for goods and services are
`
`
`
`6
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`

`

`identical and/or highly related to the goods and services long provided by Opposer under
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`Opposer’s Marks, and Applicant’s Marks are confusingly similar to Opposer’s Marks.
`
`A. Applicant’s Goods/Services are Identical to Opposer’s Goods/Services
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`It is unnecessary for Opposer to demonstrate that all of the goods and services in the
`
`Application are identical or related to those in Opposer’s registrations, and it is sufficient if
`
`Applicant’s Marks for any of Applicant’s identified goods or services in one class is likely to cause
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`confusion with Opposer's Marks for any of Opposer’s identified goods or services in that
`
`class. Tasty Greens LLC v. Campos, Opp. No. 91255119, 2021 TTAB LEXIS 257, *18 (TTAB
`
`July 9, 2021), citing Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir.
`
`1983) (holding that a single good from among several may sustain a finding of likelihood of
`
`confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
`
`(CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect
`
`to any item that comes within the identification of goods or services in the application). But here,
`
`all of Applicant’s Goods/Services are identical, or highly related, to the goods identified in
`
`Opposer’s registrations.
`
`In this case, the Class 12 goods identified in the registrations for Opposer’s Marks are
`
`identical and/or highly related to the Class 12 goods and Class 37 services set forth in the
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`Applications. Both Opposer and Applicant are automobile manufacturers who make and service
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`automobiles. See Garbis Dec. ¶ 4; Interrogatory Responses at Response No. 1. Both Opposer’s
`
`registrations and the Applications identify vehicles or automobiles in Class 12. The Class 37
`
`services set forth in the Applications are entirely directed toward servicing vehicles or
`
`automobiles. It has long been recognized that goods and services are related to one another when
`
`the services involve the goods in question and/or are generally recognized as having a common
`
`
`
`7
`
`

`

`source of origin, and thus, that the use of the same or similar marks for goods on the one hand and
`
`for services involving those goods on the other is likely to cause confusion. See, e.g., In re Detroit
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`Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (“[W]e have held
`
`that confusion is likely where one party engages in retail services that sell goods of the type
`
`produced by the other party . . . .”); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983)
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`(holding STEELCARE INC. and design for refinishing of furniture, office furniture, and
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`machinery and STEELCASE
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`for office
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`furniture and accessories,
`
`likely
`
`to cause
`
`confusion); Corinthian Broad. Corp. v. Nippon Elec. Co., Ltd., 219 USPQ 733 (TTAB 1983)
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`(holding TVS for transmitters and receivers of still television pictures and TVS for television
`
`broadcasting services likely to cause confusion).
`
`Accordingly, Opposer’s Goods/Services and Applicant’s Goods/Services are identical
`
`and/or highly related, and this factor weighs strongly in favor of a finding of likelihood of
`
`confusion.
`
`B. Applicant’s Goods/Services Must Be Considered to Travel in Identical Channels
`
`of Trade to and to be Sold to Identical Purchasers as Opposer’s Goods/Services
`
`If the identification describes goods or services broadly, and there is no limitation as to
`
`their nature, type, channels of trade, or class of purchasers, it is presumed that the identification
`
`encompasses all goods or services of the type described, that they move in all normal channels of
`
`trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v.
`
`Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir.
`
`2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to
`
`read any restrictions or limitations into the registrant’s description of goods.”). In this case, there
`
`is no limitation of any kind in the identification of goods and services set forth in the Applications,
`
`
`
`8
`
`

`

`and the goods and services set forth in the Applications are identical and/or highly related to the
`
`goods set forth in Opposer’s pleaded registrations. Accordingly, Applicant’s Goods/Services must
`
`be presumed to move in all normal channels of trade, including those in which Opposer’s
`
`Goods/Services are marketed and sold. Thus, this factor weighs strongly in favor of a finding of a
`
`likelihood of confusion.
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`C. Applicant’s Marks are Confusingly Similar to Opposer’s Marks
`
`1. Opposer’s Marks are Strong
`
`Opposer’s Marks are strong trademarks, both conceptually and in terms of consumer
`
`recognition. As described above, all of Opposer’s registrations for Opposer’s Marks have become
`
`incontestable under 15 U.S.C. § 1065, and therefore the registrations are conclusive evidence of
`
`Opposer’s validity, ownership, and exclusive rights in and to Opposer’s Marks.
`
`Opposer’s Marks are arbitrary when used in connection with Opposer’s Goods/Services
`
`because the terms set forth in Opposer’s Marks, when used in connection with Opposer’s
`
`Goods/Services, do not suggest or describe a significant ingredient, quality, or characteristic of the
`
`goods or services. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71
`
`USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as “a known word used in an
`
`unexpected or uncommon way” and observing that such marks are typically strong because they
`
`naturally serve to identify a particular source of a product or service). Further, it has long been
`
`held by the Board that designations used in a series of automobiles, like Opposer’s S-family of
`
`marks, are arbitrary, strong trademarks. Saab-Scania Aktiebolag and Saab Automobile AB joined
`
`as party plaintiff v. Sparkomatic Corporation, Opp. No. 80485, 1993 TTAB LEXIS 11, *10
`
`(TTAB March 17, 1993) (holding a series of variations on “9000” marks used on different
`
`automobiles to be arbitrary marks).
`
`
`
`9
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`

`

`Further, Opposer’s overwhelming commercial success, demonstrated by significant U.S.
`
`sales (i.e., an average of
`Redacted - Confidential Attorneys' Eyes Only
`
` of vehicles featuring one or more of Opposer’s
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`Marks on or in connection therewith per year in the U.S. over the past seven years), national media
`
`exposure, and advertising expenditures (i.e.,
`Redacted - Confidential Attorneys' Eyes Only
`
`) supports the strength of
`
`Opposer’s Marks. Garbis Dec. ¶ 11-13. In fact, as set forth below, in light of Opposer’s
`
`longstanding use of Opposer’s Marks and the commercial success of products sold in connection
`
`with Opposer’s Marks over the course of their use, it cannot be seriously disputed that Opposer’s
`
`Marks are famous, and Applicant seems to agree, admitting in its discovery responses that
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`“Opposer’s S6 and S8 passenger car model numbers are generally known by anyone in the
`
`automotive field.” Interrogatory Responses at Response No. 30.
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`2. Applicant’s Marks are Similar to Opposer’s Marks in Sight, Sound, and Overall
`
`Commercial Impression
`
`As an initial point, “in cases such as this, where the applicant’s goods are identical (in part)
`
`to the opposer’s goods, the degree of similarity between the marks which is required to support a
`
`finding of likelihood of confusion is less than it would be if the goods were not identical.”
`
`Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1288 (TTAB 2007); see also Diesel
`
`S.p.A. v. Speedway Motors, Inc., Opp. No. 91221181 (TTAB May 19, 2017) (“where the goods
`
`and services are identical or identical in part, as is the case here, the degree of similarity between
`
`the marks necessary to support a determination that confusion is likely declines”). As set forth
`
`above, Applicant’s Goods/Services are identical and/or highly related to the goods set forth in
`
`Opposer’s registrations, and accordingly, a lesser degree of similarity between the marks is
`
`required.
`
`But even if Applicant’s Goods/Services were not identical to Opposer’s Goods/Services,
`
`
`
`10
`
`

`

`Opposer’s Marks and Applicant’s Marks are so similar in sight, sound, and overall commercial
`
`impression that consumers encountering the marks are likely to be confused. Opposer owns
`
`incontestable Class 12 registrations for the marks S6 and S8. Applicant’s Marks, ES6 and ES8,
`
`incorporate the entirety of Opposer’s S6 and S8 marks, which is a strong indication that the marks
`
`are confusingly similar. See Diesel S.p.A., Opp. No. 91221181 at *22 (TTAB 2017) (“the fact that
`
`Opposer’s pleaded DIESEL mark is subsumed by Applicant’s mark increases the similarity
`
`between the two); see also, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB
`
`2009) (applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging diagnostic
`
`apparatus similar to TITAN for medical ultrasound diagnostic apparatus); In re El Torito Rests.,
`
`Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS for food items
`
`found similar to MACHO for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985)
`
`(RICHARD PETTY’S ACCU TUNE for automotive service centers similar to ACCU-TUNE for
`
`automotive testing equipment).
`
`The only additional matter over Opposer’s S6 and S8 marks in Applicant’s ES6 and ES8
`
`marks is the preceding letter “E.” According to Applicant: “The letter “E” stands for “Electric.’”
`
`Interrogatory Responses at Response No. 6. The Trademark Trial and Appeal Board has held that
`
`the prefix “E” has become commonly recognized as a designation for goods or services sold or
`
`delivered electronically. In re Int’l Bus. Machs. Corp., 81 USPQ2d 1677, 1679 (TTAB 2006) (“We
`
`see no difference in the meaning or connotation of ‘e-server’ and ‘eserver,’ and consider them both
`
`to be an abbreviated form of ‘electronic server.’”); In re SPX Corp., 63 USPQ2d 1592 (TTAB
`
`2002) (E-AUTODIAGNOSTICS merely descriptive of an “electronic engine analysis system
`
`comprised of a hand-held computer and related computer software”); In re Styleclick.com Inc., 57
`
`USPQ2d 1445 (TTAB 2000) (E FASHION merely descriptive of software used to obtain beauty
`
`
`
`11
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`

`

`and fashion information, and for electronic retailing services); Cont'l Airlines Inc. v. United
`
`Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation
`
`and ticketing of transportation services). Applicant is a manufacturer of electronic vehicles, which
`
`Applicant has acknowledged in its discovery responses and which is also evidenced by the
`
`identification of goods and services in the Applications, which repeatedly reference electric
`
`vehicles. See Interrogatory Responses at Response Nos. 2 and 3. Thus here, the addition of the
`
`letter “E” to what would otherwise be marks identical to Opposer’s Marks is likely to cause
`
`consumers to believe upon seeing the mark that the goods or services offered in connection with
`
`Applicant’s ES6 and ES8 marks are merely electronic versions of Opposer’s S6 and S8 goods and
`
`services. The prefix “E” serves only to suggest that the product is an “electronic” S6 or S8.
`
`In addition, as demonstrated by Opposer’s numerous trademark registrations, Opposer has
`
`a family of trademarks covering vehicles, parts, accessories, and related goods and services that
`
`include the term “S” followed by a number. A family of marks is defined as “a group of marks
`
`having a recognizable common characteristic, wherein the marks are composed and used in such
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`a way that the public associates not only the individual marks, but the common characteristic of
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`the family, with the trademark owner.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
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`1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The common element may be a term, a
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`phrase, or a component in the nature of a prefix or suffix. In this case, Opposer’s Marks include a
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`family of marks including the term “S” and a number. Such marks include registrations, each
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`incontestable and with priority over Applicant’s Marks, for S, S3, S4, S5, S6, S7, and S8.
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`Opposer’s consistent use of Opposer’s Marks comprising the “S”-family of marks has created an
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`expectation among consumers that the use of the term S, especially in combination with a number,
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`in a trademark used in connection with vehicles or related goods or services are produced by or
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`otherwise affiliated with Opposer. And as discussed above, the addition of the letter “E” in
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`Applicant’s Marks merely suggests to consumers that the good or service provided under that mark
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`is an electronic version of Opposer’s goods or services. This is especially true in light of the fame
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`of Opposer’s Marks, as set forth below.
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`Given this “S” family of trademarks, and given the connotation of the prefix “E” in the
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`context of electronic goods and services, a consumer is unlikely to believe the additional letter “E”
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`to be anything more than an electronic extension of that “S” family, and thus, will be confused as
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`to the source or affiliation of Applicant’s products.
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`D. Opposer’s Marks are Famous
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`The fame of Opposer’s Marks cannot be reasonably in dispute. Under the Lanham Act, a
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`mark is considered famous “if it is widely recognized by the general consuming public of the
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`United States as a designation of source of the goods and services of the mark’s owner.” 15 U.S.C.
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`§ 1125(c)(2). In assessing whether a given mark is famous, a court may consider:
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`(i) The duration, extent, and geographic reach of advertising and publicity of the mark,
`whether advertised or publicized by the owner or third parties.
`(ii) The amount, volume, and geographic extent of sales of goods or services offered
`under the mark.
`(iii) The extent of actual recognition of the mark.
`(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of
`February 20, 1905, or on the principal register.
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`Id.
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` In its discovery responses, Applicant conceded that “Opposer’s S6 and S8 passenger car
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`model numbers are generally known by anyone in the automotive field.” Interrogatory Responses
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`at Response No. 30.
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`The fame of Opposer’s Marks is plainly evidenced by the following: 1) all of the
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`registrations for Opposer’s Marks are incontestable (Garbis Dec. ¶ 7); 2) Opposer’s Marks have
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`been used by Opposer in the United States for decades (Garbis Dec. ¶ 6); 3) Opposer has generated
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`an average of
`Redacted - Confidential Attorneys' Eyes Only
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` of vehicles featuring Opposer’s Marks on or in connection
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`therewith per year in the United States over the past seven (7) years alone (Garbis Dec. ¶ 11); 4)
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`Opposer has spent
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`Redacted - Confidential Attorneys' Eyes Only
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` advertising and promotions of their vehicles including
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`vehicles featuring Opposer’s Marks on or in connection therewith (Garbis Dec. ¶ 13); and 5)
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`Opposer’s Marks and Opposer’s Goods/Services, including vehicles, have been advertised and/or
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`featured in a plethora of prominent publications, both online and offline, with wide distribution
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`throughout the United States, such as Car and Driver, CNET, and MotorTrend, among many others
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`(Garbis Dec. ¶ 12).
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`Accordingly, in light of the above, Opposer’s Marks are famous.
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`E. Uncertainty Resolved in Favor of Registrant
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`Given the identical nature of the goods and the high degree of similarity of the marks at
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`issue in this proceeding, it is unlikely there are any aspects of this case for which any doubt
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`remains. To the extent there are close or neutral factors at play, however, it is well-settled that any
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`doubt as to whether there is a likelihood of confusion must be resolved in favor of Opposer, the
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`prior registrant. See TMEP § 1207.01(d)(i); In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d
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`1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d
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`1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009);
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`see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015).
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`IV. Applicant’s Marks are Likely to Dilute Opposer’s Mark
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`A. Standard for Dilution
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`To prevail on a dilution claim, Opposer must show that: (1) it owns a famous mark that is
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`distinctive; (2) Applicant is using, or intends to use, a mark in commerce that allegedly dilutes
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`Opposer’s famous mark; (3) Applicant’s use of its mark began after, or the filing date of its intent
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`to use application is after, Opposer’s mark became famous; and (4) Applicant’s use of its mark is
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`likely to cause dilution by blurring or by tarnishment. Section 43(c)(1) of the Lanham Act, 15
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`U.S.C. § 1125(c)(1).
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`B. Opposer’s Marks are Famous and Were Famous Prior to Applicant’s Intent-to-Use
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`Application
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`As set forth in Section III.D., above, Opposer’s Marks are famous, and were famous prior
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`to Applicant adopting Applicant’s Mark. Accordingly, Opposer has made a showing that
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`Opposer’s Marks are famous and were famous prior to the filing date of the Application.
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`C. Applicant Intends to Use Applicant’s Marks, Which Dilute Opposer’s Famous Mark
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`Applicant’s intent-to-use Application is sufficient to demonstrate that Applicant intends to
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`use Applicant’s Mark. Further, Applicant stated in its discovery responses that “Applicant intends
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`to sell the goods and services in connection with Applicant’s Marks in Europe and the United
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`States.” Interrogatory Responses at Response No. 15. Accordingly, Opposer has satisfied this
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`element.
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`D. Applicant’s Marks are Dilutive of Opposer’s Marks
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`1. Applicant’s Marks are Likely to Cause Dilution by Blurring
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`“Dilution by blurring is ‘association arising from the similarity between a mark or trade
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`name and a famous mark that impairs the distinctiveness of the famous mark.’ Trademark Act
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`Section 43(c)(2)(B). Dilution may be likely ‘regardless of the presence or absence of actual or
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`likely confusion, of competition, or of actual economic injury.’ Section 43(c)(1).” New York
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`Yankees P'ship v. IET Prods. & Servs., 114 USPQ2d 1497, 1501 (TTAB May 8, 2015) (quoting
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`15 U.S.C. § 1125(c)(1) and (2)(B)). The statute’s concern is that “the gradual whittling away of
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`distinctiveness will cause the trademark holder to suffer ‘death by a thousand cuts.’” Nat’l Pork
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`15
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`Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010) (citation omitted).
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`Opposer must only prove dilution by blurring by a preponderance of the evidence. Research in
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`Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1198 (TTAB 2012).
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`The Trademark Act enumerates six non-exhaustive factors a tribunal may consider in
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`determining whether a mark is likely to cause dilution by blurring:
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`(i) The degree of similarity between the mark or trade name and the famous mark.
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`(ii) The degree of inherent or acquired distinctiveness of the famous mark.
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`(iii) The extent to which the owner of the famous mark is engaging in substantially
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`exclusive use of the mark.
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`(iv) The degree of recognition of the famous mark.
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`(v) Whether the user of the mark or trade name intended to create an association with the
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`famous mark.
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`(vi) Any actual association between the mark or trade name and the famous mark.
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`15 U.S.C. § 1125(c)(2)(B)(i)-(vi). In weighing the record evidence, “some of these statutory
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`dilution factors may be given more weight than others, depending on the evidence of record.”
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`Omega SA v. Alpha Phi Omega, 118 USPQ2d 1289, 1298 (TTAB 2016) citing Citigroup Inc. v.
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`Capital City Bank Grp., 94 USPQ2d 1645, 1667 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
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`1253 (Fed. Cir. 2011).
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`
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` On balance, an examination of the factors set forth above demonstrates that Opposer is
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`entitled to summary judgment on its dilution claim. The first two factors (i.e., similarity and
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`distinctiveness) overlap with the likelihood of confusion analysis set forth above, and for the
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`reasons set forth above, these factors weigh in Opposer’s favo